Substantial Similarity

There are several “exclusive
rights” of copyright. Within limits, the authors of copyrighted works may
prevent other people from copying or distributing their works; from
transforming them into what are known as “derivative” works (translations and
adaptations); and in some cases from publicly performing or publicly displaying
their works. We’ll look at each of these and other exclusive rights in more
detail later in this chapter. However, overarching all of these exclusive
rights is a core concept that is easy to state, but sometimes complex to apply:
the concept of “substantial similarity.”

It’s an infringement of copyright for a user to make a
copy of a copyrighted work without the permission of the copyright owner. In
Part One, we looked at technological copying in the context of books, sound
recordings, videotapes, computer programs, and the Internet. Since much of the
copying is of entire works, such unauthorized copying (subject to various
exceptions we’ll discuss in the next chapter) is usually infringement. The
major issue raised by the new technologies is that copying is done by hundreds
or thousands or millions of individuals, and the problem is how to adjust the
law to take account of such decentralized but massive copying. As we saw, the
law has developed considerably in recent years to deal with the problem.

We’re now going to focus on a different issue. What if
the second work is not an exact duplicate of the original, but rather an
independent work that incorporates certain, but not all, aspects of the
copyrighted [152] work? For example, a writer
incorporates a paragraph of dialogue from a copyrighted book or play, or a
songwriter repeats a pattern of six notes of a copyrighted song, or a painter
incorporates into a new painting a single figure from someone else’s painting.
Has the second author infringed the copyright of the first?

The issue in these cases is whether the second work is
“substantially similar” to the first. It doesn’t have to be an exact duplicate
to be an infringement, but it does have to take enough of the copyrighted work
that it can be said that the second work was not “independently created.”
Drawing the line between noninfringement and infringement, between independent
creation and substantial similarity, can be frustratingly difficult. The courts
have pretty well refused to adopt a simple numerical test to resolve this
issue, instead relying upon general statements of policy, and sensitivity to
the facts of particular cases. What is clear, however, is that taking even a
small portion of a copyrighted work can constitute copyright infringement.

Let’s see how the substantial similarity test works in
the context of several different types of copyrighted works. We’ll see that the
test is intimately related to several other key copyright doctrines that are
also used to distinguish what infringes from what doesn’t.

The Story Lines of Books, Plays, and Motion Pictures

Steven Spielberg has been
sued, it seems, for just about every movie he’s ever made. Lisa Litchfield
wrote a musical about Fudinkle and Lokey, two aliens from Maldemar who are
temporarily stranded on earth and befriended by children who are living with
their scientist father at the North Pole. Gary Zambito wrote Black Rainbow, a screenplay about the
fictional archeologist Zeke Banarro and his expedition in search of
pre-Columbian gold artifacts. Geoffrey Williams wrote a children’s book about
an imaginary zoo containing cloned prehistoric animals. And Barbara
Chase-Riboud wrote Echo of Lions, a
historical novel about a mutiny by slaves aboard the slaveship Amistad. All of
these authors saw similarities between their own works and Spielberg’s movies: E. T. The Extraterrestrial, Raiders of the
Lost Ark, Jurassic Park, and Amistad.
Paul Schrader, who had written an ultimately rejected screenplay of Close Encounters of the Third Kind,
appealed to the Writers Guild to obtain a screenplay credit. Yet, [153] Spielberg ultimately won each case. (Of the
five, Chase-Riboud apparently fared the best. After she lost in her efforts to
enjoin the release of Amistad, she
withdrew the suit and praised Spielberg’s production. It was assumed that she
received a payment in settlement of her claim.)

The problem with analyzing these or thousands of similar
cases is that the plots of stories, books, movies, and plays are quite
intricate, and it’s not easy to summarize the issues for someone who has not in
fact viewed or read both works. The judges typically devote as much as half
their opinions to detailed descriptions of the two works. Judge Learned Hand
was the author of two of the leading cases. In the first, he considered the
claim that a motion picture, The Cohens
and the Kellys, had infringed on Anne Nichols’s popular play, Abie’s Irish Rose(1922). Judge Hand
conceded that “It is of course essential to any protection of literary property
. . . that [154] the right cannot be limited
literally to the text, else a plagiarist would escape by immaterial
variations.” Although there were similarities in idea or theme, Hand concluded
that “The stories are quite different,” and that “A comedy based upon conflicts
between Irish and Jews, into which the marriage of their children enters, is no
more susceptible of copyright than the outline of Romeo and Juliet.”

A still from one of the
many movies in the successful Cohens and
Kellysseries from 1926 into the 1930’s. Both Anne Nichols and Universal had
apparently tapped into a promising theme.

[153]Abie’s
Irish Rose.

This is the original company among many that played Abie’s Irish Rose. It was advertised
using a life-sized three-dimensional billboard erected next to the West Side
Highway in New York. The play was made into a movie in 1929, and again in 1946,
and was even adapted into a radio series that lasted for thirty-two months.

[153]A piece of buncombe.Nichols’s play is described by Brooks Atkinson
as “one of the most naive plays in history . . . a mechanical little piece of
buncombe that Anne Nichols wrote in 1922. . . . The comedy bored all the
critics except one . . . when it opened, and infuriated them when it settled
down to an epochal run” of 2,427 performances.

Yet in the second case, Hand reached the exact opposite
result. He found that the movie Letty
Lynton(1932), produced by
Metro-Goldwyn Pictures and starring Joan Crawford and Robert Montgomery,
infringed upon Edward Sheldon’s play Dishonored
Lady. After a careful analysis, Hand found “parallelism” of character and
incident sufficient to constitute substantial similarity, even though the
dialogue of the works was different, and even though both works were based
loosely upon an actual murder case in which Madeleine [155]
Smith in 1857 poisoned her former lover, but was found by a jury not to
be guilty of the crime.

Ever since Hand decided these classic cases, law
professors have delighted in assigning them to students, in order to underscore
how difficult it can be to reconcile the outcome of complicated cases. In these
and later cases (particularly Peter Pan Fabrics, from which the following quote
is taken), Judge Hand himself recognized the difficulty of drawing the line
between noninfringement and infringement:

The
test for infringement of a copyright is of necessity vague. In the case of
verbal “works” it is well settled that although the “proprietor’s” monopoly
extends beyond an exact reproduction of the words, there can be no copyright in
the “ideas” disclosed but only in their “expression.”* Obviously, no principle
can be stated as to when an imitator has gone beyond copying the “idea,” and
has borrowed its “expression.” Decisions must therefore inevitably be ad hoc.

Katharine Cornell as Madeline Cary in Dishonored Lady. Ms. Cornell was known as “The First Lady of the
American Stage” (until she was joined—or superseded—by Helen Hayes). Brooks
Atkinson describes the play as “a squalidly romantic murder play,” written by
the popular playwright of the day, Edward B. Sheldon (with Margaret Ayer
Barnes). Atkinson bemoans the mediocrity that prevailed on Broadway in the
early twentieth century, and particularly complains that

The hacks tainted talented writers
who might have accomplished something of permanent significance if the
standards of the time had been more discriminating. A case in point was Edward
B. Sheldon. . . . Since Sheldon was an educated young man with a genuine
understanding of the craft of the theater and cultivated standards of taste in
literature, he was qualified to write on a higher level than his
contemporaries. But, like them, he thought of plays in terms of craftsmanship.
He was not motivated to write by what he saw and experienced in life. He wrote
on plausible topics that might produce a hit.

[154]The padded-shoulder look.

Joan Crawford and Nils
Asther in Metro-Goldwyn’s Letty Lynton.
The movie is noted for ushering in Crawford’s “padded-shoulder look,” developed
by the Hollywood costume designer Adrian.

At least one thing is clear, however. If someone does copy the exact language of a
copyrighted work, then it can be infringement even if it represents only a
small portion of that work. In one recent case, The Nationmagazine printed
an article that copied between three hundred and four hundred words from Gerald
Ford’s as yet unpublished memoirs.† The article focused upon the circumstances
surrounding the Nixon pardon, and was designed to “scoop” Timemagazine’s “first
serial rights,” for which Timehad paid $25,000. The Supreme Court, by a
vote of 6 to 3, held that the taking of as little as three hundred words from
the original unpublished manuscript constituted copyright infringement.

Here’s a portion of the article in The Nation, highlighting 138 of the 300-400 words taken verbatim
from Gerald Ford’s memoirs, A Time to
Heal, as marked in the appendix to the Supreme Court opinion:

In justifying the pardon, Ford goes
out of his way to assure the reader that “compassion
for Nixon as an individual hadn’t prompted my decision at all.” Rather, he
did it because he had “to get the monkey
off my back one way or the other.” . . .

Ultimately,
Ford sums up the philosophy underlying his decision as one he picked up as a
student at Yale Law School many years before. “I learned that public policy often took precedence over a rule of law.
Although I respected the tenet that no man should be above the law, public
policy demanded that I put Nixon—and Watergate—behind us as quickly as
possible.”

Later,
when Ford learned that Nixon’s phlebitis had acted up and his health was
seriously impaired, he debated whether to pay the ailing former President a
visit. “If I made the trip it would
remind everybody of Watergate and the pardon. If I didn’t, people would say I
lacked compassion.” Ford went.

He was stretched out flat on his back.
There were tubes in his nose and mouth, and wires led from his arms, chest and
legs to machines with orange lights that blinked on and off. His face was
ashen, and I thought I had never seen anyone closer to death.

Visual Works

The issue of substantial
similarity can be better conveyed in the context of visual works, because then
you [156] can see the entire works at a glance,
and make your own assessment of the similarity of the two. One of the leading
cases was again decided by Judge Learned Hand. It involved fabric designs by
Peter Pan Fabrics, Inc., which were allegedly infringed by Martin Weiner Corp.

[156]Byzantium. At left, Peter Pan’s fabric
design; at right, the infringing design. The case illustrates a common
confusion between the standards of copyrightability and infringement. As we saw
in the last chapter (p. 127), even a small modicum of originality may be
sufficient for copyrightability. It may therefore be the case that the
relatively minor variations in the defendant’s design would have been
sufficient for it to have claimed copyright in those variations. But in the
case of infringement, the test is not
how much creative work the defendant adds, but how much it takes from the first
work. In this case, that amount made the second work “substantially similar,”
and therefore infringing.

The Peter Pan fabric was a quiltlike montage of
individual squares based upon traditional Turkish designs. Martin Weiner
created its fabric by carefully—but only slightly—altering the design of the
individual elements, while maintaining the same overall appearance. Judge Hand
was not impressed.

No one disputes that
the copyright extends beyond a photographic reproduction of the design, but one
cannot say how far an imitator must depart from an undeviating reproduction to
escape infringement. . . . In the case at bar we must try to estimate how far
its overall appearance will determine its aesthetic appeal when the cloth is
made into a garment. Both designs have the same general color, and the arches,
scrolls, rows of symbols, etc. on one resemble those on the other though they
are not identical. Moreover, the patterns in which these figures are distributed
to make up the design as a whole are not identical. However, the ordinary
observer, unless he set out to detect the [157] disparities,
would be disposed to overlook them, and regard their aesthetic appeal as the
same. That is enough; and indeed, it is all that can be said, unless protection
against infringement is to be denied because of variants irrelevant to the
purpose for which the design is intended.

[New Yorker cover of March 19, 1976,poster
available in a limited editionat cartoonbank.com]

[157] “That famous poster.”

Saul Steinberg’s New Yorkercover, later adapted to a poster.

[Upper portion of Moscow on the
Hudson movie poster.The poster is available at various locationsonline,
including musicman.com]

[157]Moscow
On the Hudson.

The infringing portion of
the movie poster.

Another leading case is that of Saul Steinberg, a
cartoonist for The New Yorkermagazine. His illustration for a cover of
the magazine became an immediate classic, and was afterward distributed in
poster form. Later, a movie company incorporated some of the features of this
cartoon into an advertisement for one of its movies, Moscow on the Hudson(1984).
Clearly, the works are not identical: they show different buildings, and they
even show views looking in opposite directions from New York.

However, the court focused on numerous similarities,
including the general style of the posters, the use of a blue wash across the
top to represent the sky and of a red band to represent the horizon, the use of
similar typeface, similar perspective and layout, and similar details, such as
the water towers, cars, buildings, and other features. Citing the oft quoted
lines that “no plagiarist can excuse the wrong by showing how much of his work
he did not pirate,” and that “copyright infringement may occur by reason of a
substantial similarity that involves only a small portion of each work,” the
court found that the movie poster infringed Steinberg’s artwork.

A recent case from the world of television highlights how
difficult and fact-intensive the cases can be. Sid & Marty Krofft created a
very successful children’s television program in the 1960s, H. R. Pufnstuf, that generated a line of
unique products and endorsements. McDonald’s Corp. decided to develop a series
of commercials that used characters obviously inspired by the Krofft
characters. Take a look at the pictures, and [158] decide
for yourself whether the characters were “substantially similar.” There were
certainly differences in details, but the jury in the trial court concluded,
and the circuit court on appeal agreed, that the similarities in overall
appearance were too great, and that McDonald’s had infringed.

Top, Sid & Marty Krofft’s Pufnstuf and Witchiepoo. Below, Mayor
McCheese and Hamburglar, circa 1971. The court held that the substantial
similarities were evident in the “total concept and feel” of the Pufnstuf
Living Island and the McDonaldland settings, including the other characters and
the backgrounds.

[159]Try this at home.

The Pufnstuf case is certainly one where
reasonable people can disagree. Each year, I ask my copyright students whether
they believe the characters are substantially similar, and there is always a
split in opinion. About the relative unsophistication of children, however, I
suggest the following experiment: whatever the next doll fad—Barbie, Cabbage
Patch Kids, beanie babies, or Pokémon—try slipping your child an inexact
look-alike doll and see if they are willing to overlook the subtle differences.

[159]The
case was very much flavored by two different factors: first, Needham, Harper
& Steers, the advertising agency for McDonald’s, had been negotiating with
the Kroffts to use the Pufnstuf characters in the proposed McDonald’s
advertising campaign, and, after breaking off the negotiations, proceeded to
develop Krofft-like characters anyway. Indeed, Needham even hired former Krofft
employees to design and construct the costumes and supply the voices for the
McDonaldland characters. Such behavior might have demonstrated a certain bad
faith on the part of the agency, which led the court to be less sympathetic to
them and McDonald's.

Secondly, the court felt that the intended
audience—children might be unsophisticated and therefore not likely to catch
the subtle distinctions between the characters. For example, in response to
McDonald’s assertion of differences between the Pufnstuf and Mayor McCheese
characters, the court stated: “We do not believe that the ordinary reasonable person,
let alone a child, viewing these works will even notice that Pufnstuf is
wearing a cummerbund while Mayor McCheese is wearing a diplomat’s sash.” It was
also clear that the Kroffts were injured by the infringement; after the
McDonald’s campaign, the Kroffts began having trouble making or extending their
own licensing arrangements. To add insult to injury, the Ice Capades, which had
previously licensed the Pufnstuf characters, discontinued their license with
the Kroffts and signed on to use the McDonald’s characters!

Photographs

Some summers ago, on a family
vacation to the Grand Canyon, I took what has become one of my favorite
photographs, shown on the next page. Later that same summer, I saw for sale on
the sidewalk in Greenwich Village in New York the poster shown on the [160] page: a copy of a photograph by Ansel Adams (in
the bargain bin for a mere $5, including the frame). Could my photograph be an
infringement of the Ansel Adams photograph?

The answer is clearly no, my photograph does not
infringe. I didn’t in fact copy Ansel Adams’s photograph, and so, no matter how
similar the resulting picture may be, mine didn’t infringe his. Indeed, when I
took my photo, I wasn’t even aware there was such an Ansel Adams photograph,
and so could not possibly have copied it.

Edward Samuels

The Grand Canyon 1993

[160]Ansel Adams (right).

The credit states that this poster was “printed from a copy of
an Ansel Adams photograph.” As a matter of fact, this particular photograph is
in the public domain, since it was originally commissioned as a government
work. As such, anyone may make a print of it, and even alter it. (On U.S. government
works, see p. 215.) In one recent official-looking book of Adams photographs,
the print of this photo is cropped at the top, cutting off the top of the rock
formation!

By contrast, Ansel Adams closely controlled his
copyrighted prints, personally producing many of them himself, and assigning
control of his copyrighted works to the Ansel Adams Publishing Rights Trust.

[159]Astounding interpretations.

Ansel Adams apparently would not object to the making of
creative prints of his works, provided permission was obtained from his estate
or his archive at the University of Arizona.

Trained as a pianist, I am aware that I depended upon the
music of the past (Bach through Scriabin) as the source for my musical
expressions. As most musicians, I am not a composer. Photographers are, in a
sense, composers and the negatives are their scores. They first perform their
own works, but I see no reason why they should not be available for others to
perform. In the electronic age, I am sure that scanning techniques will be
developed to achieve prints of extraordinary subtlety from the original
negative scores. If I could return in twenty years or so I would hope to see
astounding interpretations of my most expressive images. It is true no one
could print my negatives as I did, but they might well get more out of them by
electronic means. Image quality is not the product of a machine, but of the
person who directs the machine, and there are no limits to imagination and
expression.

The situation illustrates the doctrine of “independent
creation.” Two authors may independently create similar works, and they may
each have a copyright if they did not copy the other. Similarly, neither one
infringes the other. I assume that there are thousands of photographs more or
less similar to these—taken of the most conspicuous formation in the Grand
Canyon looking south from the main visitors’ center on the north rim—and that
they are each copyrightable, for what it’s worth, and each not an infringement
of any of the others.

However, let’s do what law professors love to do, change
the facts a little. Let’s assume that I was an admirer of Ansel Adams, knew
about his photograph of the Grand Canyon, and planned my own trip precisely in
order to duplicate his photo as best I could. I hiked to the precise location,
chose the correct lens and filters, and waited for the precisely correct
weather and the precisely correct time of day to get the shadows just right to
duplicate Ansel Adams’s photograph. Might I thereby infringe the copyright in
Adams’s work?

[161]Several
cases suggest that I might. In 1982, John Duke Kisch took a photograph of a
“woman holding a concertina” under a stylized poster at the Village Vanguard
nightclub in New York. In 1985, Perry Ogden took a photograph showing John
Lurie, a famous saxophonist, at the same location in the nightclub. Kisch sued
Ammirati & Puris, the advertising agency that had hired Ogden to take the
photograph for a beverage advertisement. Ammirati moved to dismiss the case, on
the ground that the photograph was obviously different. The court refused to
dismiss the case, finding that there were sufficient similarities that a jury
might find the works “substantially similar” under the law. The court
particularly cited the fact that the photos “were taken of the same small
corner of the Village Vanguard nightclub,” that “the same striking mural
appears as the background for each photograph,” that the individuals in each
photo are seated and holding musical instruments, and that “the lighting,
camera angle, and camera position appear to be similar.”

[161]The Village Vanguard.

Left, the Kisch photograph
of a woman sitting at a table at the Village Vanguard nightclub in Manhattan.
Right, the Ammirati & Puris photograph of musician John Lurie.

Howard Alt took a photograph showing two pens on a grid
with a yellow circle. This was not an idle snapshot, but a carefully set up
arrangement that was part of a series of photos taken over several days. Joe
Morello, a famous photographer, witnessed the photo shoot, and saw the [162] final product in Alt’s portfolio. Morello then
created a similar photograph. Was Morello’s photo an infringement? The court
had no difficulty finding that “the composition, backgrounds, colors, lighting,
objects photographed and cropping, are substantially similar,” and thus a
copyright infringement. The case was made particularly appealing because Alt, a
beginning photographer, had included the photograph in his portfolio, and was
himself accused of copying the work from the more famous Morello, when in fact
the copying was the other way around!

What these cases show is that the copyright in a
photograph can be infringed not only when it is mechanically and precisely
reproduced: it can also be infringed when other people reproduce substantially
similar works using their own cameras.

Music

Ronald Mack wrote the song
“He’s So Fine,” which was made popular by the Chiffons in 1962. Several years
later, George Harrison wrote “My Sweet Lord,” which was first recorded by Billy
Preston and then became a hit for Harrison in 1970. The works are very
different in their orchestration and mood, but there are some basic
similarities. In 1976, a federal court in New York found that the works were
substantially similar, and that the Harrison song infringed the Mack song.

[163]The first motif.

[163]The second motif.

The experts and the court ultimately
reduced the songs to their essential notes. In each song, there were two
motifs: the first consisted of three notes, “sol-mi-re” (G-E-D, or “He’s so
fine,” or “My sweet lord”) repeated about four times; followed by
“sol-la-do-la-do” (G-A-C-A-C, or “Don’t know how I’m gonna’ do it,” or “I
really want to see you”), repeated three or four times. Although almost every
repetition involved a different number of beats, the judge found that the
“differences essentially stem . . . from the fact that different words and
number of syllables [163] were involved. This
necessitated modest alterations in the repetitions or the places of beginning
of a phrase, which, however, has nothing to do whatsoever with the essential
musical kernel that is involved.”

There was also an intervening melody in Harrison’s song,
repetitions of “Hallelujah” or “Hare Krishna,” which the court found to be a
mere “responsive” interjection that, like the “Dulang-dulang” repetitions in
the Mack song, was “used . . . in the same places to fill in and give rhythmic
impetus to what would otherwise be somewhat dead spots in the music.”

Every year my copyright students listen to the songs, and
every year we disagree about whether they are or are not substantially similar.
Every year, Marcia, my wife, tells me that she immediately recognized the
similarities, and wondered why someone didn’t tell Harrison before the work was
released. After the case, radio stations around the country played the songs
back to back, and it proved to be a tremendous embarrassment for Harrison,
whose creativity was bound to look pale when compared to that of Lennon and
McCartney. The judge tried to save face for Harrison by concluding that
Harrison did not deliberately copy, but that the copying had been
“subconscious.”

[163] “Dardanella,” made up of eighth notes.

[163] “Kalua,”made up of quarter notes.

The case is reminiscent of a similar one from an earlier
era. “Dardanella” was a popular song of 1910-20. It had a hypnotic bass
accompaniment of eight notes, repeated over and over, “with no changes, except
the variation of a musical fifth in the scale to accommodate itself
harmonically to the changes in the melody.” Jerome Kern, one of the great
songwriters of the day, then wrote an even more popular song, “Kalua,” which
allegedly used a similar bass accompaniment. The case was decided again by
Judge Learned Hand, this time as a district court judge, who seemed to get all
the interesting copyright cases in New York. Hand found that Kern’s work
infringed the earlier song, even though it did so only in the accompaniment and
not in the melody. He accepted Kern’s assertion that “he was quite unconscious
of any plagiarism,” but found that “Mr. Kern must have followed, probably
unconsciously, what he had certainly often heard only a short time before.”

Although
Hand described the bass accompaniments as “ostinatos” that were “exactly
alike,” it’s obvious that [164] they’re not
identical. The “Dardanella” theme is made up of eighth notes, with a return to
the same note (G, and later D) to fill out the second half of every beat. This
was said to evoke the beat of a drum or tom-tom, appropriate to the piece.
There are no such eighth-note fillers in “Kalua,” which results in a less
frequent beat that was said to “indicate the booming of the surf upon the
beach,” appropriate to the “Kalua” theme.If you look closely, you’ll also see that in the third and fourth bars
of each theme of “Dardanella,” the notes on the beat of the ostinato jump a
full octave. In “Kalua,” in the third and fourth bars, they jump only half an
octave.

[164]The half-a-million-dollar difference.

There was a major difference between the Harrison and Kern
cases. In the Harrison case, the recovery was ultimately $587,000. (This amount
was reduced from over $1.6 million, because Allen Klein had purchased from the
copyright owner the claim against Harrison. This was described as a gross
fiduciary breach, in that Klein was a former manager of the Beatles!) In the
Kern case, Hand called the controversy “a trivial pother,” “a mere point of
honor,” and set the damages at the nominal sum of $250—a rather Pyrrhic victory
for the plaintiff.

The nominal recovery suggests that Hand was trying to
apply the wisdom of Solomon to reach a just result—allowing the plaintiff a
technical victory, but not the monetary relief that normally accompanies such a
victory. As we’ll see later in this chapter, if a copyright owner proves
infringement, then, among other things, the owner is entitled to recover the
defendant’s profits attributable to the infringement. Hand never even seems to
have considered the possibility.

[166]Not millionaires many times over.

According to the old Tin Pan Alley
model, still the basis of much pop and rock songcraft and of out antiquated
music copyright laws, a song has a lyric, a melody, and a sequence of chords.
In a court of law, you can sue and win if someone writes a song that quotes
substantially from the words, the tune, or the chord progression of a song you
have previously copyrighted. You cannot sue on the basis of a pirated rhythm
pattern or beat, which is one of the main reasons rhythmic innovators like Bo
Diddley and James Brown are not millionaires many times over.-Robert
Palmer

I don’t agree with Palmer
that copyright protects a chord progression—certainly not if the chord
progression represents the only similarity between two works.

Thus, in order to conclude that the tunes are “exactly
alike,” one has to first assume that certain notes simply don’t count, and that
certain notes have the same tonal impact as others. These are some of the same
assumptions that were necessary to conclude that “My Sweet Lord” was the same
song as “He’s So Fine.” (Indeed, even the characterization of Kern’s use of the
notes as an “ostinato” is a generalization, since the sequence appears in only
about half of the bars in the chorus, not continuously throughout it.)

In my copyright class, I suggest that these cases are
examples of how the same notes, given a very different orchestration in the
Harrison case, or a different melody line in the Kern case, can actually sound
quite different. I also suggest that different notes can in fact be made to
sound quite similar. By way of example, I play a musical parody created by the
fictional musical group The Rutles (actually a Lorne Michaels production
starring the British comedian Eric Idle together with several stars from the
early Saturday Night Live), in parody
of the Beatles. The parodies are probably excused by the fair use doctrine.*
But the clever parodies also manage to conjure up—arguably sound “substantially
similar” to—the originals by the use of different notes. For example, the
Beatles song “Get Back” has a repeated sequence of F#-G, F#-G. The parody of
it, “Get Up And Go,” uses the sequence G-F#-E-G, G-F#-E-G, orchestrated
precisely like the Beatles song, to make a tune that after a few repetitions
seems like a perfect substitute for the original. The point of the [165] exercise is that music cannot be reduced to a
simple series of notes. Just as with story lines, visual works, and
photographs, musical works can be similar even when there are distinct
differences. Whether or not the similarities go as far as to make them “substantially
similar” is, obviously, a tough call.

Even if a work is
substantially similar to a prior work, it doesn’t necessarily prove that the
second author in fact copied. In order to win an infringement suit, an author
must prove that the alleged infringer had access
to the copyrighted work, so that copying could
have taken place. This will be easy to prove if, as in the “He’s So Fine” and
“Dardanella” examples, the first work was popular and would have been known to
the second writer. But access may be hard to prove if the first work was
obscure.

To illustrate the point, let’s take a look at another
recent musical copyright case. Ronald Selle wrote “Let It End” in 1975. He
performed the song with his group in Chicago, and sent copies to several record
companies; but the song was never a success, and was never sold either in
record or sheet music form. In 1978, the Bee Gees wrote “How Deep Is Your
Love,” which was later featured in the movie Saturday Night Fever. Selle sued the Bee Gees, and presented an
expert witness who testified that the songs were substantially similar—indeed,
so similar “that they could not have been written independent of one another.”

[163]“How Deep Is your
Love?”

Copyright suits are hard on
the reputation of defendants. Here’s an excerpt from a sixties-style tribute to
the Bee Gees, lamenting the suit brought against them. [Online bonus—the
page on right is a free bonus, and in color too!]

At the trial, the jury returned a verdict that the Bee
Gees had infringed Selle’s song. Nevertheless, the judge granted the Bee Gees
what is known as a “judgment notwithstanding the verdict.” Basically, the judge
concluded that the Bee Gees had no access to Selle’s song, and so could not
have copied it, no matter how similar the songs may have sounded to the jury.
Without access, there is no infringement. This obviously means that successful
songwriters, whose works are being [166] performed
(and heard, and “subconsciously” copied) will be more likely to win
infringement suits than unknown songwriters.

What Are the Exclusive Rights

of Copyright?

Copyright is nothing more nor
less than a series of “exclusive rights” that we grant to authors in order to
encourage them to create their works. The authors may invoke these rights by
bringing lawsuits against others who do any of the things included within the
enumerated rights. But of course authors don’t generally make money only by
bringing lawsuits. The primary value of the copyright is the right to make
money by making and selling copies of the work, or by selling to someone else,
generally a publisher, the exclusive rights to make and sell copies of the
work.

[166]The complications
of copyright licenses.

The primary purpose of
copyright is not to bring lawsuits, but to make money from licensing the rights
of copyright. This chart, which I produced as a lawyer on the case, shows some
of the interlocking licenses and purchases of the television rights in the
Hopalong Cassidy character. Clarence Mulford was remarkable for his foresight
in reserving television rights before most people yet realized the tremendous
potential of the medium. And William Boyd (see p. 149) was equally remarkable
for his foresight in buying up the various strands of rights in the television
productions.

Let’s take a closer look at the exclusive rights
enumerated in the current copyright act. (In the enumerations below, the date
represents the date on which the exclusive right was first added to the
statute.)

[167]

Copying, 1790

The essence of copyright is
the exclusive right to “copy.” Under the original 1790 act,* this right was
subsumed under the “sole right and liberty of printing” or “reprinting” the
copyrighted work; but today is described as the exclusive right “to reproduce
the copyrighted work in copies.” Obviously, this right is not absolute, as
isolated or personal copies will probably be allowed in many circumstances.
We’ll explore some of the limitations in the next chapter.

Distribution, 1790

The exclusive right to
distribute a copyrighted work has been a part of the law since the 1790 act.
Originally subsumed under “the sole right and liberty of . . . publishing and
vending” the works, the statute now speaks in terms of the “exclusive rights .
. . to distribute copies or phonorecords of the copyrighted work to the public
by sale or other transfer of ownership, or by rental, lease, or lending.” This
exclusive right includes the exclusive right to import copies of the work into
the United States. In many cases, the distribution right will overlap with the
right to copy, since it will be the same person or company that makes and
distributes the infringing works. But a manufacturer who doesn’t distribute
will infringe the first right, and a distributor who doesn’t manufacture will
infringe the second.

The distribution right is subject to a very important
exception, known as the “first sale” doctrine. Under this doctrine, once
someone has bought a legitimate copy of a copyrighted work, that person is free
to resell that particular copy without copyright liability. Thus, if you buy a
book, you may sell or lend only that copy of the book, so long as you don’t
make additional copies; if you buy a videocassette of a movie, you may sell or
rent or lend only that copy to others, so long as you don’t make additional
copies; or if you buy a painting, you may sell or display that painting to
others, so long as you don’t make additional copies.

For the most part, then, you’re allowed to further
distribute individual copies of works that you have legitimately obtained. The
copyright owner is supposed to charge enough when the work is first sold to
compensate for any additional resales of those particular works: or, to put [168] it another way, the exclusive rights in
particular copies are exhausted upon the “first sale” of those particular
copies. As a result of this doctrine, the exclusive right to distribute is much
more limited than it might at first appear. (As we saw earlier, there are
exceptions to the first sale doctrine that extend control of copyright owners
over the rental, as opposed to the sale, of sound recordings* and computer
programs.†)

Derivative Works, 1870 and 1909

The
exclusive right to make derivative works covers all ways in which a copyrighted
work might be adapted or incorporated into a new work. The exclusive right of
translation was added only in 1870, and expanded in 1909 to include the
exclusive right “to translate the copyrighted work into other languages or
dialects, or make any other version thereof, if it be a literary work; to
dramatize it if it be a nondramatic work; to convert it into a novel or other
nondramatic work if it be a drama; to arrange or adapt it if it be a musical
work; to complete, execute, and finish it if it be a model or design for a work
of art.”

The current act is even broader, granting the exclusive
right to make a “translation, musical arrangement, dramatization,
fictionalization, motion picture version, sound recording, art reproduction,
abridgment, condensation, or other form in which a work may be recast,
transformed, or adapted.”

Public Performance, 1856 and 1897

For those works that are
normally performed—music, drama, choreography, and motion pictures—the
copyright owner of the original work retains the exclusive right to perform the
work publicly. This right was only added for dramatic works in 1856, and for musical
works in 1897.

The important issue here is what constitutes a public performance. If you write a song,
I’m free to sing the song in the shower (assuming that I don’t take my shower
in public), but I’m not free to perform the work publicly without your
permission—usually upon paying a licensing fee. There are lots of limitations
on this right, particularly excusing many nonprofit performances of a work.‡

[169]Prior
to 1995, the public performance right did not extend to sound recordings. In
that year, however, Congress provided that a limited public performance right would
be granted for digital audio transmissions* of sound recordings.

Public Display, 1976

The display right, added only
in 1976, gives the copyright owner the exclusive right to display the work in
public. Just like the distribution right, the display right is subject to the
first sale doctrine: owners who have purchased individual copies of works may
display those individual copies “either directly or by the projection of no
more than one image at a time, to viewers present at the place where the copy
is located.” Thus, the public display right is also much more limited than it
at first appears.

Attribution and Integrity, 1990

Many foreign countries grant
authors certain “moral rights” in their works, and recognition of such rights
is required by the Berne Convention,† the major international treaty dealing
with copyright. These rights have included, among other things, the right of
attribution—that is, the right to have one’s name associated with one’s
works—and the right of integrity—that is, the right to protect against the
destruction or mutilation of one’s works. In the United States, a handful of
states in recent years extended to certain authors such rights in their works.
When the United States joined the Berne Convention in 1988, it was debated
whether American law was truly in compliance with the international
requirement, and whether the American law should be changed.

The response, in 1990, was a very limited federal right
of attribution and integrity. The right extends only to authors of “visual
art,” defined to include paintings or sculptures that exist in only one copy,
or in a limited edition of no more than two hundred signed and consecutively
numbered copies. For such works, the statute gives the painter or sculptor the
right to claim the authorship of works, or to deny the use of one’s name for
works not created by the author; and the right, with limitations, to prevent
intentional distortion of one’s work, or to prevent the use of one’s name in
association with works that have been distorted or mutilated.

[170]

Fixation and Trafficking in Sound Recordings

and Music Videos, 1994

In December 1994, as part of
its treaty obligations under the World Trade Organization (WTO), Congress added
a new section granting performers of live musical performances the exclusive
rights to record their performances, or to transmit or distribute unauthorized
recordings. Prior to this time, federal copyright existed only in works that
were already “fixed in a tangible medium of expression”* (although live
performances might be protected under the law of some states). With the
adoption of this new amendment, “live” musical performers are now granted
special protection under federal law against unauthorized “bootlegging” of
their performances. Some commentators have read this new section not only to
prohibit future creation of bootleg recordings, but also to prohibit the
continued distribution or transmission of previously made unauthorized
recordings of live musical performances.

This is a reprint cover showing issues of Illegal Beatles, a magazine devoted to
tracking both pirated and bootleg recordings. Complete listings of Beatles
covers, pirates, and bootlegs can also be found at various sites on the
Internet.

[171]Out on the streets in eight days.

In his book Bootleg,
Clinton Heylin distinguishes between pirated and bootleg records. The former
are unauthorized copies of existing records, which were first brought under
federal copyright protection with the Sound Recording Amendment of 1971. The
latter, bootlegs, are unauthorized recordings or copies of live performances,
and were not regulated under the Copyright Act until the 1994 amendment. One
bootlegger describes how fast he could do his work:

Pink Floyd, when they came back in
’87, the first show of the world tour was in Ottawa, and a friend of mine drove
up there, taped it, bought a concert programme, Fed Ex’d the tape and the
programme from Ottawa the next morning to me [in California]. I handed it all
in. It was mastered that afternoon. I had plates by the day after on the other
side of the continent! We had records, in a double gatefold, on pink vinyl,
with four-colour labels, out on the streets in eight days. . . . And we sold
7,000 of those . . .One of the guys
who worked for the Floyd went into It’s Only Rock and Roll in the Village [in
New York] and he saw this bootleg and they hadn’t even played there yet! “Jesus
Christ! I work for these guys, let me see that!” He looked at it and was
absolutely stunned. He took it back to the hotel and showed it to the band.
They were so freaked out they sent him back to buy three more for them. This is
a week and a half after the show.

Technological Protection Measures, 1998

The Digital Millennium
Copyright Act† granted a new type of protection against the unauthorized
circumvention of technological protection measures. Under that act, owners of
copyright in digital works may protect them by encoding the works to prevent
unauthorized access or copying. If owners so encode their works, users are
legally prohibited from circumventing such protection schemes. As we’ve seen,
the 1998 Act, the most complicated in the history of copyright, has lots of
exceptions and special limitations.

Copyright Management Information, 1998

The Digital Millennium
Copyright Act also added a new type of protection for “copyright management
information.” Owners of copyright in digital works may put their works in
electronic “envelopes,” or electronically embed in their works, information
that identifies the author and certain other copyright information relating to
the work. If an owner does so, then it is now illegal for a user to knowingly
alter or remove such copyright management information from copies of the work.
This information [171] will make it easier for
copyright owners to notify users about their rights, and to track the posting
of copies of their works on-line.

Remedies

What if one of the exclusive
rights of an author, as described above, is violated? Normally, an attorney for
the author calls up the infringer or the attorney for the infringer, and they
discuss how the infringer will stop violating such rights, or how much the
infringer should pay for the rights. If they can’t come to terms, then the
author’s ultimate weapon is to bring a lawsuit in federal court.

Assuming that the author is able to prove the
infringement, and that there are no exceptions or limitations (as described in
the next chapter), then the author is entitled to a broad range of remedies.
Some of these remedies (like recovery of lost profits and the recovery of costs
and attorneys’ fees in bringing a lawsuit) are designed to compensate the
copyright owner for losses. Some (like fines and injunctions and criminal
liability ) are designed to deter infringement in the first place. And others
(like forfeiture of infringing copies and recovery of the infringer’s profits)
are designed to prevent the infringer from gaining by the infringement. Let’s
take a closer look at the specific remedies available to a wronged copyright
owner. (Again, the dates indicate the date that the remedy was first enacted by
Congress. Most of the remedies, except as noted, continue to be available
today.)

Forfeiture of Infringing Copies, 1790

The English Statute of Anne,*
all the way back in 1710, provided that infringers of copyright “shall forfeit”
all infringing books “to the . . . Proprietor thereof, who shall forthwith
Damask and make Waste Paper of [172] them.” The
first U.S. law in 1790 similarly provided that infringing copies of all
copyrighted works would be forfeited to the owners “who shall forthwith destroy
the same.” In 1802, this provision was extended to include “the plate or plates
on which such print or prints are or shall be copied.”

Under the current law, a court may impound infringing
works, and ultimately order the destruction of copies or “plates, molds,
matrices, masters, tapes, film negatives, or other articles by means of which
such copies or phonorecords may be reproduced.” This can be a formidable
weapon. For example, in one commercial record piracy case twenty-five thousand
illicit tape recordings were seized, in addition to the blank cartridges, labels,
machinery and equipment used, or that might in the future be used, for their
manufacture. Except in the most egregious cases, the infringers often agree to
the payment of a licensing fee, in order to avoid forfeiture of what might
involve a substantial capital investment.

Fixed Fines, 1790-1909

Beginning in 1790, the
statute provided for what was essentially a fine for copyright infringement.
The amount of the fine was usually split between the owner of copyright and the
United States. The 1790 act provided for payment of “fifty cents for every
sheet which shall be found” in the possession of the infringer. The 1802 act
provided for $1 to be paid for every infringing print; the 1856 act, for
violation of the performance right, provided $100 for the first violation and
$50 for each subsequent violation; the 1870 act provided for $10 to be paid for
every infringement of a painting or statue. The 1895 act provided for a total
penalty, in the case of a photograph, of not less than $100 nor more than
$5,000; and, in the case of a painting or statue, raised the penalty to not
less than $250 nor more than $10,000.

All of these fixed fees were replaced in 1909 by the
provisions described below under the headings “Lost Profits” (p. 174) and
“Discretionary Remedy” (p. 176).

Injunctions, 1819

Since 1819, the courts have
had the power to enforce copyrights by way of injunction. With this power, a
court can order an infringer to stop the [173] infringement,
and (as specifically provided in 1897) enforce the order, if necessary, by
holding the infringer in contempt. Injunctions are granted rather liberally in
copyright cases.

Criminal Liability, 1897

Congress first made copyright
infringement a crime in 1897, when it made it a misdemeanor, punishable by up
to a year in prison, for an infringer willfully and for profit to present an
unauthorized public performance of a dramatic or musical work. The criminal
provisions were broadened in 1909 to cover any
copyright infringement undertaken “willfully and for profit.”

Criminal proceedings are rarely brought, except in the
case of fairly extensive record, videotape, and computer program piracy. In
these contexts, however, in order to deter such activity, the penalties have
been raised several times over the years. Under current law, you’re in serious
trouble if you’re involved in major piracy of records or disks, videotapes, or
computer programs. The really serious stuff is when you’re involved in creating
or distributing, in any 180-day period, at least ten copies of works with a
retail value of more than $2,500. For that you can go to jail for up to five
years (up to ten years for a second offense), and pay a fine of up to $250,000
for individuals, or $500,000 for organizations. Even in lesser quantities, the
penalty can still be severe.

[173]FBI Warning.

Here’s a typical warning found at the beginning of a home
videotape:

FBI WARNING

Federal law
provides severe civil and criminal penalties for the unauthorized reproduction,
distribution or exhibition of video discs.Criminal
copyright infringement is investigated by the FBI and may constitute a felony
with a maximum penalty of up to five years in prison and/or a $250,000 fine.

This warning, as applied to
wholesale pirates, is a reasonable one. But as applied to home consumers, it is
a bit of bravado. Unless done “for profit or private financial gain,” copyright
infringement, though giving rise to civil remedies, is not a crime. I suspect
the warning scares away a few home tapers, but for most consumers it probably
has about the same impact as the warning of criminal penalties for removing the
tags from pillows.

Under the 1909 statute, criminal infringement required
that the infringement be “willfully and for profit”; but in 1976, the language
was expanded to include acts done willfully and “for purposes of commercial
advantage or private financial gain.” In 1997, in the No Electronic Theft (NET)
Act, the definition of “financial gain” was extended to include the “receipt,
or the expectation of receipt, of anything of value, including the receipt of
other copyrighted works.” Under that act, the unauthorized reproduction and
distribution of even a single copy of a copyrighted work with a retail value of
more than $1,000 can subject a person to criminal penalties. Are you scared
away yet?

The
testimony showed quite clearly that in the creation of profits from the
exhibition of a motion picture, the talent and popularity of the “motion
picture stars” [in this case, Joan Crawford and Robert Montgomery] generally
constitutes the main drawing power of the picture, and that this is especially
true where the title of the picture is not identified with any well-known play
or novel. . . . In addition to the drawing power of the “motion picture stars,”
other factors in creating the profits were found in the artistic conceptions
and in the expert supervision and direction of the various processes which made
possible the composite result with its attractiveness to the public.

-Chief
Justice Charles Hughes,Sheldon
v. Metro-Goldwyn Pictures

[175]Pitfalls of Hollywood accounting.

The Sheldon (Letty
Lynton)case illustrates the
numerous pitfalls involved in trying to determine profits in the movie
industry. The courts had to figure out whether to include, in the calculation
of “net” profits, those profits from international distribution and those
profits received by Loew’s theaters that were subsidiaries of Metro-Goldwyn.
The courts also had to determine whether and how to charge the following items,
among others, against the “net” profit reported for the film: a portion of
profits paid directly by Metro-Goldwyn to the Louis B. Mayer Co., a partnership
that had exacted the percentage when they merged with Metro to form MGM;
allocation of overhead costs, such as production, advertising, publicity,
distribution, and interest; charges for “idle time” during which key
employees—directors, producers, stars and writers—were paid under a yearly salary,
even though they were not actually involved in the production of movies; and
income taxes. Who said this was easy?

Lost Profits, 1909

In its major recodification
of the Copyright Act in 1909, Congress provided that a copyright owner could
generally recover against an infringer for “such damages as the copyright
proprietor may have suffered due to the infringement.” This usually meant the
loss of sales by the copyright owner that were attributable to the
infringement. There’s plenty of precedent for this type of recovery in other
areas of law—for example, for personal injuries or breaches of contract—so the
courts have developed lots of rules for figuring out exactly how much “damage”
is attributable to particular wrongs. However, it is frequently difficult or
impossible to prove such damages with any degree of certainty. So Congress
added another remedy, the amount of profits made by the infringer.

Infringer’s Profits, 1909

When the copyright owner
hasn’t suffered much harm, or when it’s impossible to prove the amount of the
harm, the best recovery may be the infringer’s profits from the infringement.
If I write a book that’s only modestly successful, but then a famous Hollywood
producer makes an unauthorized but popular movie of it, which do you think I’d
rather recover: the meager sales I might have lost on the book, or the massive
profits that the movie producer has made from the movie? Since 1909, the
Copyright Act has allowed the copyright owner to recover “profits which the infringer
shall have made from such infringement.”

The problem in cases like this will be to prove how much
of the infringer’s profits are attributable to the wrongdoing. The leading case
on the subject is the Letty Lynton
case.* The district court in that case had [175] awarded
damages of $587,604.34, Metro-Goldwyn’s net profit from the movie. The
appellate court had reduced the recovery to only 20 percent of that amount,
figuring that about 80 percent of the movie’s success was due to factors other
than the infringing script. The Supreme Court agreed, and let the figure stand
at only 20 percent of profits (plus $33,000 for attorneys’ fees). Although that
may seem like a small amount for a case that, including appeals, had stretched
out over many years, it was certainly more than Sheldon had originally been
bargaining for, about $30,000 for the movie rights.

“Costs” of the Lawsuit, 1831;

Attorney’s Fees, 1909

Since 1831, parties to
copyright lawsuits have been entitled to “costs.” This covers the relatively
minor costs of filing papers or having transcripts made. The usually much
larger attorneys’ fees—reimbursement for the fees paid to one’s own attorneys
to prepare and present the case—have been allowed to the prevailing party, in
the discretion of the judge, since 1909. This practice is presumably designed
to fully compensate copyright owners who must sue in order to enforce their
rights; to encourage infringers to settle, lest they end up paying the copyright
owner’s attorneys’ fees (as well as their own); and to assure that meritorious
copyright owners are not denied justice just because they are too poor to
afford an attorney.

The provision can sometimes backfire on copyright owners.
Courts increasingly make plaintiffs
pay the attorneys’ fees of defendants!
The recent trend was set in motion by a Supreme Court case involving the
songwriter John Fogerty. Fogerty, as a member of the group Creedance Clearwater
Revival, had written the song “Run Through the Jungle,” and then sold the
copyright in the work. Fogerty, as a solo performer, later wrote and recorded
the song “The Old Man Down the Road.” Fogerty was then put into the unenviable
position of being sued for infringing his own earlier work.

[176]“Run Through the
Jungle.” At left, Creedence
Clearwater Revival’s Chronicle, The 20
Greatest Hits,including Fogerty’s
“Run Through the Jungle,” originally released on the multiplatinum album Cosmo’s Factory (1970). At right, John
Fogerty’s Centerfieldalbum (1984), containing the hit song “The
Old Man Down the Road.”

[176]The
two works were not identical, though they did have thematic similarities,
particularly in the repeated chorus and the base accompaniment. The case went
to a jury, which found that the works were not substantially similar.The
Supreme Court upheld the award of attorneys’ fees for defendant Fogerty even
though there was no allegation or proof that the suit had been brought in bad
faith or that it was frivolous. Ultimately, Fogerty was awarded over $1.35
million in attorneys’ fees, apparently the largest fee ever awarded in a
copyright case.

Might such an
outcome have a chilling effect upon owners of copyright thinking about bringing
infringement suits? Possibly—balanced only by the possibility of getting reimbursement of attorneys’ fees
if they win.

Discretionary Remedy, 1909

[171]Advantages of
registering.

Since 1988 Congress has
dispensed with all “formalities,” so that notice and registration are not a
prerequisite to federal copyright protection. However, there are still
advantages to registering copyrighted works. One such advantage is that you
cannot recover either the discretionary “statutory damages” or the potentially
substantial “attorneys’ fees” if you don’t register. My advice: if you think
there’s any chance you’ll need to sue to protect your copyright, then register
the work with the Copyright Office, as described on p. 209.

In 1909, Congress eliminated
the “fixed fines” system described above, and replaced it with a system
allowing recovery of any amount by which the copyright owner was injured.
Recognizing, however, that there were many cases where damages would be hard to
prove, Congress gave copyright owners the option of receiving a special
recovery “in lieu” of actual damages or profits. Recovery was available in an
amount that “to the court [that is, the judge] shall appear just,” within
ranges set in the statute for different types of works. The system was
basically [177] retained in the 1976 Act, under
the heading “statutory damages,” with a general range for all copyright
infringements. As they currently stand, statutory damages may be set within the
discretion of the judge at any amount between $500 and $20,000, with an option
to go as high as $100,000 for “willful” infringement, or as low as $200 if the
infringer had no reason to know that the acts constituted copyright infringement.
The damages may even be reduced to zero for certain innocent educational,
library, or public broadcasting uses.

Who’re You Gonna’ Sue?

In the Betamax case,* the Supreme Court addressed the issue
known as “contributory infringement”—that is, the issue of when one party is
liable for the infringing activities of another. Since there were few
authoritative cases in the field of copyright, the Court borrowed from patent
law, where the doctrine was more developed. The Court concluded that, if the
video recorder was capable of “substantial noninfringing” uses, then the
manufacturer, Sony, would not be liable for the activities of its customers who
might otherwise infringe. That way, the machine remains available for use by
those persons who have a legitimate, noninfringing purpose in using it.

One of the
major themes of late twentieth-century copyright has been the extent to which
the intermediate players have managed to get themselves out of copyright
liability. Sony was held not liable for potential infringements by customers
using its machines; NYU essentially got itself out of liability for infringing
activities of its professors; libraries got a broad statutory exemption;
on-line service providers got a limitation on general liability in the Digital
Millennium Copyright Act; and even companies that used to find themselves
liable for copyright infringement for the activities of their employees have
managed to set up systems so that they now comply with their copyright
obligations.

In most of
these contexts, the price for immunity has been the obligation to assist in the
enforcement of rights. The Digital Millennium [178] Copyright
Act provides that manufacturers of video recorders must include copy protection
systems in their machines.* NYU,† under its settlement governing photocopying
by its professors, must notify its professors of their copyright obligations,
and help to enforce against abuse. (The settlement was presumably supposed to
be a model for other schools to follow, but, as a settlement, it has no
precedential impact, and I doubt that many other schools have as aggressive an
enforcement policy as NYU)Libraries
have to implement reasonable standards for preventing widespread infringement
by their patrons.‡ On-line service providers,• under the Digital
Millennium Copyright Act, are required to cooperate with copyright owners by
removing or blocking access to on-line sites that infringe, and, under some
circumstances, identifying the primary infringers.

One of the
great success stories of recent years has been the extent to which businesses
have gone from being the copyright infringers to being the copyright enforcers.
The Copyright Clearance Center now has site licenses with many large companies
so that they pay for their photocopying [179] activities.*
And various computer software organizations, by bringing test cases and
advertising their enforcement efforts, have been successful in getting most
large companies to purchase site licenses to cover the multiple copies of their
business software, and to police against the installation of unauthorized
copies by their employees.

This is an ad by the
Business Software Alliance (BSA) encouraging “worker bees” to report software
piracy at their companies. The BSA claims that the campaign was successful, and
resulted in a substantial increase in the reporting of software piracy. Through
education, advertising, offering site licenses, and, where necessary, pursuing
infringers in court, the Alliance and other software organizations have been
successful in getting most major companies to purchase legitimate copies of
software for their businesses, and even to police against illegitimate copies
brought in by employees.

Conclusion

Copyright owners are given a
broad range of rights, and a broad range of remedies to ensure that their
rights are protected. However, these rights are not absolute. In the next
chapter, we’ll discuss some of the very important limitations on the rights of
copyright owners.